Paper 8
`Trials@uspto.gov
`Entered: August 20, 2015
`
`571–272–7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`KINGBRIGHT ELECTRONICS CO. LTD., KINGBRIGHT CORP.,
`SUNLED CORP., KINGBRIGHT CO. LLC, SUNLED CO. LLC, and
`SUNSCREEN CO. LTD.,
`Petitioner,
`
`v.
`
`CREE, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00746
`Patent 8,659,034 B2
`_______________
`
`
`
`Before KEVIN F. TURNER, BENJAMIN D. M. WOOD, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: August 20, 2015
`
`571–272–7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`KINGBRIGHT ELECTRONICS CO. LTD., KINGBRIGHT CORP.,
`SUNLED CORP., KINGBRIGHT CO. LLC, SUNLED CO. LLC, and
`SUNSCREEN CO. LTD.,
`Petitioner,
`
`v.
`
`CREE, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00746
`Patent 8,659,034 B2
`_______________
`
`
`
`Before KEVIN F. TURNER, BENJAMIN D. M. WOOD, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`
`I. INTRODUCTION
`Kingbright Electronics Co. Ltd., Kingbright Corp., SunLED Corp.,
`Kingbright Co. LLC, SunLED Co. LLC, and Sunscreen Co. Ltd.
`(“Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an inter partes
`review of claims 1–10 of U.S. Patent No. 8,659,034 B2 (Ex. 1001, “the
`’034 Patent”). Cree, Inc. (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”) to the Petition. We have jurisdiction under 35
`U.S.C. § 314, which provides that an inter partes review may not be
`instituted “unless . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing the unpatentability of claims
`1–10 of the ’034 Patent. Accordingly, the Petition is denied, and no trial is
`instituted.
`
`A.
`Related Proceedings
`The parties indicate that the ’034 Patent is at issue in the following
`district court cases: Cree, Inc. v. Kingbright Electronics Co., No. 14-cv-621
`(W.D. Wis.) and Cree, Inc. v. Harvatek Corp., No. 14-cv-620 (W.D. Wis.);
`and Cree, Inc. v. Honeywell International Inc., No. 14-cv-737 (W.D. Wis.).
`Pet. 1–2; Paper 6, 2–4. Patent Owner also details numerous related patent
`applications and reexamination proceedings. Paper 6, 2–4. Petitioner also
`indicates that U.S. Patent Nos. 6,600,175 and 7,943,945, which are related to
`the ’034 Patent, are the subject of petitions for inter partes review in
`IPR2015-00741, IPR2015-00743, and IPR2015-00744. Pet. 2; Paper 6, 2.
`
`2
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`
`B.
`The ’034 Patent
`The ’034 Patent relates to light emitting diodes (“LEDs”) that produce
`white light. Ex. 1001, 1:34–36. According to the ’034 Patent, such a device
`may be made through a blue LED and a down-converting luminophoric
`medium to produce white light. The blue emissions impinge on a
`luminophoric medium that absorbs the short wavelength and creates a
`secondary emission with a longer wavelength, and the combined emissions
`mix to crate white light. Id. at Abstract, 8:47–57.
`
`C.
`Illustrative Claim
`Claim 1 is independent, is deemed illustrative, and is reproduced
`
`below.
`
`1. A white light LED, comprising a gallium nitride based
`semiconductor LED die configured to emit blue light primary
`radiation, said LED die being packaged with phosphor or
`fluorescer in a polymer, wherein the phosphor or fluorescer is
`configured to interact with the blue light primary radiation to
`produce a secondary emission down-converted light, and
`wherein the blue light primary radiation and said down-
`converted light produce a white light output, said gallium
`nitride based semiconductor LED die comprising indium, and
`said phosphor or fluorescer being dispersed in said polymer.
`Id. at 13:30–14:7.
`
`
`D.
`Evidence of Record
`Petitioner relies on alleged Applicant Admitted Prior Art (“AAPA”)
`and the following references1 (see Pet. 3–14):
`
`
`1 The Petition also discusses other references in a “Secondary Evidence of
`Obviousness” section (Pet. 14–19), as well as additional submitted
`
`3
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`
`
`
`Reference
`U.S. Patent No. 3,691,482 (“Pinnow”)
`U.S. Patent No. 4,915,478 (“Lenko”)
`U.S. Patent No. 5,126,214 (“Tokailin”)
`U.S. Patent No. 4,727,283 (“van Kemenade”)
`U.S. Patent No. 5,578,839 (“Nakamura”)
`Shuji Nakamura et al., Candela-Class High-Brightness
`InGaN/AlGaN Double Heterostructure Blue-Light-Emitting
`Diodes, Appl. Phys. Lett. 64 (13) 1687-89 (Mar. 28 1994)
`(“Candela”)
`U.S. Patent No. 5,283,425 (“Imamura”)2
`
`Exhibit No.
`Ex. 1003
`Ex. 1005
`Ex. 1006
`Ex. 1008
`Ex. 1011
`
`Ex. 1027
`
`
`
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds3 (see Pet. 21–23):
`Claim(s)
`Basis
`References
`1–7 and 10
`§ 103(a) AAPA
`2
`§ 103(a) AAPA and Nakamura or Candela
`3, 4, and 6
`§ 103(a) AAPA and van Kemenade or Pinnow
`5 and 10
`§ 103(a) AAPA and van Kemenade or Pinnow or Tokailin
`7–9
`§ 103(a) AAPA and Lenko or Imamura
`
`
`
`
`references (i.e., Stevenson, Nakamura II, Tabuchi, Tadatsu, Nichia Blue
`LED, and Kido II), but does not apply those references directly in any
`ground of unpatentability. We do not consider these unapplied references in
`the instant Decision.
`2 Imamura is listed as “statutory prior art” (Pet. 3), but is not included as an
`exhibit.
`3 Petitioner’s assertions of its grounds are presented on a claim-by-claim
`basis (Pet. 21–51), but we present the grounds based on the differing
`grounds asserted and the claims challenged in each ground.
`
`4
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`
`II. ANALYSIS
`A. Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`No. 2014-1301, 2015 WL 4097949, *7–8 (Fed. Cir. July 8, 2015).
`Although the parties raise several claim limitations as needing or not
`needing specific construction (Pet. 19–21; Prelim. Resp. 3–6), on this record
`and for purposes of this Decision, we determine that no claim terms require
`express construction.
`
`B.
`
`Asserted Grounds of Unpatentability
`1.
`AAPA
`Per the grounds of unpatentability listed above, independent claim 1 is
`alleged to be unpatentable over alleged Applicant Admitted Prior Art
`(“AAPA”) alone. Pet. 23–31. . Patent Owner argues that this ground is not
`based on prior art patents or printed publications, such that the Petition fails
`to comply with statutory and regulatory requirements. Prelim. Resp. 6–7.
`We agree with Patent Owner.
`35 U.S.C. § 311(b) provides that “[a] petitioner in an inter partes
`review may request to cancel as unpatentable 1 or more claims of a patent
`only on a ground that could be raised under section 102 or 103 and only on
`the basis of prior art consisting of patents or printed publications”
`(emphasis added). Further, 37 C.F.R. § 42.104(b)(4) provides that the
`petition “must specify where each element of the claim is found in the prior
`art patents or printed publications relied upon” (emphasis added).
`
`5
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`
`Looking to Petitioner’s art that it seeks to have applied against the
`challenged claims, Petitioner acknowledges that AAPA are
`(1) applicant statements in the specification directly asserting
`that certain technology is prior art; or (2) later-dated statements
`of experts and inventors on behalf of the applicant/Patent
`Owner in other proceedings asserting that certain technology
`(outlined in the specification and elsewhere) was publicly
`known at the time of the patent filing and is, therefore, prior
`art.”
`Pet. 5. As discussed below, we reject Petitioner’s asserted ground relying
`solely on this alleged “AAPA” as not based on a prior art patent or printed
`publication.
`AAPA – Blue LED
`Petitioner cites to “AAPA – Blue LED,” which is identified as a
`section of the ’034 Patent (Ex. 1001, 9:31–39), as well as a section of
`Michael Tischler’s Declaration submitted in a related reexamination
`proceeding (Ex. 1014 ¶¶ 9, 10). Pet. 5–7. But Petitioner does not explain
`sufficiently how Michael Tischler’s Declaration, or any of the documents
`referenced therein, qualify as a prior art patent or printed publication. For
`example, the Nichia blue LED product literature (Pet. 5 n.2) is alleged as
`bearing a “fax header date stamp,” but the Petition fails to provide any
`information indicating this literature was publicly accessible so as to be a
`prior art printed publication. Moreover, Petitioner does not identify any
`specific portions of the patent documents mentioned in the cited section of
`the ’034 Patent as a basis for any asserted grounds of unpatentability, as
`noted by Patent Owner. Prelim. Resp. 7–8; see, e.g., Pet. 24–31. As such,
`Petitioner has not shown that “AAPA – Blue LED” is, or otherwise
`evidences, a prior art patent or printed publication.
`
`6
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`
`AAPA – Blue LED InGaN/AlGaN
`Petitioner cites “AAPA – Blue LED InGaN/AlGaN” which refers to a
`section of Dr. Shuji Nakamura’s Declaration submitted in a related
`reexamination proceeding (Ex. 1023, ¶ 11), but as Patent Owner notes, Dr.
`Nakamura’s declaration is not a prior art patent or printed publication.
`Prelim. Resp. 8. Additionally, the relevant section of Dr. Nakamura’s
`declaration cites to Candela, discussed above, but does not describe any
`specific statements in that journal article. As such, Petitioner has not shown
`that “AAPA – Blue LED InGaN/AlGaN” is, or otherwise evidences, a prior
`art patent or printed publication.
`AAPA – Down-Conversion to White Light - Kido
`Petitioner cites to “AAPA – Down-Conversion to White Light -
`Kido,” which is identified as a section of the ’034 Patent (Ex. 1001, 10:48–
`51), and certain sections of Kido (EP 0647694) that are mentioned in the
`’034 Patent. Pet. 9–10. We agree with Patent Owner that the section of the
`Specification relied upon discusses how particular materials may be used in
`the context of the invention, but does not admit that such methods of using
`those materials are prior art. See Prelim. Resp. 9. Although Kido is clearly
`a patent, Petitioner does not rely on Kido specifically in its contentions for
`any of the grounds of unpatentability. See Pet. 23–31. If Petitioner’s intent
`is actually to rely specifically on Kido instead of the AAPA, in any portion
`of the asserted grounds, that intent is not clear from the Petition. See 37
`C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the
`claim is found in the prior art patents or printed publications relied upon.”)
`(Emphasis added).
`AAPA – Lumogen® Dye
`
`7
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`
`Petitioner cites to “AAPA – Lumogen® Dye,” which is identified as a
`section of the ’034 Patent (Ex. 1001, 9:39–45), as well as a section of
`Michael Tischler’s Declaration submitted in a related reexamination
`proceeding (Ex. 1014 ¶ 13). Pet. 10–11. Mr. Tischler’s Declaration,
`however, is not a prior art patent or printed publication, as noted by Patent
`Owner. Prelim. Resp. 9–10. Further, Petitioner does not explain sufficiently
`how Lumogen dyes, or any other aspect of the information discussed in the
`cited sections of the ’034 Patent and Michael Tischler’s Declaration, qualify
`as a prior art patent or printed publication.
`AAPA – Co-Packaged LED and Phosphor
`Petitioner cites to “AAPA – Co-Packaged LED and Phosphor” which
`is identified as a section of Dr. Nakamura’s Declaration submitted in a
`related reexamination proceeding (Ex. 1023, ¶ 12), which cites to Japanese
`Patent document 5-152609 (“Tadatsu”). Pet. 11-13. As Patent Owner notes
`(Prelim. Resp. 10), the declaration is not a prior art patent or printed
`publication, and the cited patent is used only to support the testimony of the
`declarant and is not applied against the challenged claims with sufficient
`specificity.
`AAPA – Down-Conversion to White Light, AAPA – LED Displays and
`Arrays
`The additional portions of the AAPA all cite to sections of the ’034
`Patent. Even considering these sections as admissions that may be
`considered “prior art consisting of patents,” or admissions that constitute
`background knowledge that may be imputed to a hypothetical person of
`ordinary skill for purposes of an obviousness analysis, Petitioner has failed
`to provide any motivation for any combination of those sections, together or
`
`8
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`with the other portions of the AAPA.
`For example, with respect to claim 1, the Petition provides that “as the
`application of the same AAPA for multiple limitations demonstrates, it was
`well known to combine multiple of the claimed limitations in single
`devices.” Pet. 30. Similarly, Petitioner provides that “the limitations of
`Claims 1-10 were well known to one skilled in the art, such that one skilled
`in the art could have combined the elements of the presented references by
`known methods with predictable results.” Pet. 22.
`Such statements do not, however, provide a rationale for why such
`references or admitted knowledge should be combined to render the claims
`obvious. The mere recitation of elements being prior art is not necessarily
`sufficient to show obviousness. “[A] patent composed of several elements is
`not proved obvious merely by demonstrating that each of its elements was,
`independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 418 (2007).
`Additionally, Petitioner states that “[t]o the extent that any portion of
`AAPA – Down- Conversion to White Light – Kido is not considered AAPA,
`Kido II is separately submitted as statutory prior art for consideration in
`combination with the Section I References.” Pet. 58. This statement,
`without more, is insufficient to explain how any of the challenged claims are
`unpatentable. See 37 C.F.R. § 42.104(b)(4) (“The petition must specify
`where each element of the claim is found in the prior art patents or printed
`publications relied upon.”) (emphasis added). Even if we were to take Kido
`II as being specifically applied, we discern no rationale to combine it with
`the AAPA or any of the so-called “Section I References.” See Pet. 23–31.
`The mere recitation of elements being prior art is not sufficient to show
`
`9
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`obviousness. For the foregoing reasons, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing that claim 1 is obvious over
`AAPA, with similar findings as to dependent claims 2–10, by virtue of their
`dependencies.
`
`
`III. CONCLUSION
`Petitioner does not demonstrate a reasonable likelihood of prevailing
`on its challenge to the patentability of claims 1–10 of the ’034 Patent as
`unpatentable under 35 U.S.C. § 103.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`10
`
`
`
`IPR2015-00746
`Patent 8,659,034 B2
`
`PETITIONER:
`
`Thomas S. Reynolds II
`Marlee A. Jansen
`HANSEN REYNOLDS DICKINSON CRUEGER LLC
`treynolds@hrdclaw.com
`mjansen@hrdclaw.com
`
`
`
`PATENT OWNER:
`
`Peter M. Dichiara
`Emily R. Whelan
`Andrej Barbic
`WILMER CUTLER PICKERING HALE AND DORR LLP
`peter.dichiara@wilmerhale.com
`emily.whelan@wilmerhale.com
`andrej.barbic@wilmerhale.com
`
`11
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